The great football legend Vince Lombardi would be the first to acknowledge that he alone did not make the Green Bay Packers the mightiest football team of the 1960s. "Individual commitment to a group effort--that is what makes a team work, a company work, a society work, a civilization work," he bellowed. The immortal coach's words echo decades later, for whether it's played on the football field or in the field of law, teamwork is the key to success. And although earning a Juris Doctorate--a law degree--is a fundamental step in pursuing a legal career, it is absolutely possible to be a valued member of a patent team without having "J.D." stenciled after your name.
In patent law, success is measured by your ability to huddle with inventors, attorneys, and CEOs and come up with ways to defensively and offensively protect their intellectual property. And it takes a whole team of legal practitioners--technical specialists, patent agents, researchers, legal secretaries, paralegals, business advisors, marketing officials, interpreters, foreign associates, docketing and information technology personnel (none of whom necessarily have a law degree)--to execute the play and gain patent protection for the client's ideas and inventions.
Patent Law in Europe Without a Law Degree
In the U.S., many people opt to undertake formal training and obtain a law degree before entering the patent profession. In Europe, and particularly in Germany, however, having a law degree and a Ph.D. is rare.
"In Europe, patent attorneys have to have a university degree in natural science and then are trained in law on the job--they have to pass exams which are primarily law orientated--but they do not have to study law," reveals Guenter Isenbruck, one of Germany's leading patent attorneys. Isenbruck estimates that "clearly less than 1% to 2% have both degrees [natural science and law]." Isenbruck, a Ph.D. chemist, has spent his entire career in patent law, having worked as both a European and National patent attorney.
Isenbruck has seen a big change in attitudes toward patent law in the past 10 years in Germany. It used to be envisioned as a career for introverted paper-pushers, but is now an attractive alternative to laboratory science. "People who are willing to talk with other people ... to motivate scientists to reveal their ideas" are highly sought after, says Isenbruck. In Germany, close relationships between a law firm and its clients are paramount to success. There is a clear preference, Isenbruck says, for patent attorneys to be near their clients. "Work is often discussed over lunch," he says, so it is crucial to have good social skills and be willing to leave the office and meet with clients.
The young scientists of yesteryear used to shirk away from the natural sciences, in Germany, explains Isenbruck. "Chemistry, biology, gene technology--these scientific areas were not preferred [10 years ago]. Therefore, the number of people going into these fields clearly decreased," says Isenbruck. Consequently, he believes there are gaping holes in certain areas of science that may provide exceptional opportunities in patent law. "It means that people who start to study chemistry today will have excellent job chances 5 years from now."
Young scientists also are much more familiar with the idea that their work needs protection, especially with all the collaborations going on between academics and industry. Consequently, the German government is sponsoring and financing projects to bring intellectual property departments to more academic settings. Very few universities, says Isenbruck, have in-house patent counsel to provide advice on turning experiments into inventions, or to work out lucrative licensing deals. It might prove to be valuable experience, then, to get involved in your university's growing intellectual property directives, while continuing your scientific training or research.
Technical Specialists and Patent Agents: J.D., no; B.S., yes
So where might a scientist feel most at home in the field of law? It's understandable that a graduate who has spent years working on their Ph.D. thesis and embroiled in postdoctoral research is going to think twice about spending another 3 to 4 years at law school. However, it isn't necessary to go to school, or have a law degree, to be considered suitable for a position in a law firm's intellectual property patent department. Technical specialists and patent agents, in particular, do not need to have any legal training before they get their collective feet in the door.
But those technical specialists and patent agents must have science or engineering qualifications. In this respect, scientists have a leg up on law students who have no scientific background, because it is not possible to be a patent agent without a scientific qualification. In fact, the U.S. government will not admit anyone to the patent bar examination unless they have a science-based (bachelor's) degree.
What Are Technical Specialists and Patent Agents?
Technical specialists and patent agents perform essentially the same functions--preparing patent applications and going head-to-head with patent offices in the U.S. and abroad to argue why their clients' inventions should be patented. The difference between the two positions is that a patent agent has passed the patent bar exam, earned their registration number and is duly recognized by the U.S. government as someone who practices patent law. A technical specialist, on the other hand, cannot alone sign off on legal documents or communicate with the U.S. patent office.
Patent agents are typically paid more than technical specialists in law firms but both are paid less than law associates (those who have finished law school and have their J.D.) and, of course, partners (senior members of a law firm). Typical salaries for a technical specialist-type position can range from $50,000 to the mid-$70,000's. Agents are paid somewhere in this range too, perhaps up to somewhere in the $80,000's.
Both technical specialists and patent agents must bill a certain number of hours a year, and "billable hours" is something that can become an obsession in patent law. It depends on the type of law firm you work for, but you may be required to work 1600 to 2100 hours a year. Typically, you have to be at work for 8 hours to bill 6 (nonbillable activities, such as lunch, coffee breaks, and discussing your weekend plans all add up).
Reach for the Stars
For a scientist without a J.D., life in patent law begins at the technical specialist level. In general terms, a technical specialist's job is to first understand the science underlying an "invention" and then craft a well-written patent application that broadly describes the unique aspects of that discovery or scientific development.
That means broadening out a rug-sized piece of Astroturf that a client regards as his invention so that the patent application ends up protecting a lot more--not only that small piece of artificial grass, but maybe even the entire football field, the stands, and the parking lot!
To do this well requires focus, discipline, and intelligent reasoning, but above all, creative imagination. A technical specialist must be able to look at each "element" of an invention and figure out how it can be broadened. If the invention uses bacterial cells, can you also use mammalian cells? How many different ways can you administer a drug? The goal is to prevent other people from making the invention (a patent doesn't give you the right to make something--it gives you the right to stop everyone else from making it without your permission!). A patent that only "claims" bacterial cells will not protect against someone who uses mammalian cells instead.
Similarly, you cannot write a patent application that will infringe upon someone else's patent. A technical specialist must, therefore, keep in mind all the other "art"--prior patents and scientific publications--that may touch upon some aspect of your client's invention and steer clear of that work. It is very difficult to get a patent if the invention has, within certain legal boundaries, already been patented, described, used, or sold. It's your job to scour the database and find out if this is the case, report your findings to the client and advise them what to do next.
Technical specialists and patent agents also can become involved in everything from resolving inventorship disputes, infringement lawsuits, and invalidating patents to public affairs, scrutinizing depositions, and designing your client's business plans. So you must be willing to apply your creativity and communication skills across the board.
Science + Law = Patent Law
It is a mistake to believe that a flair for writing and a Ph.D. in science are all it takes to conquer the patent world. You might not need a law degree, but you do need to practice the law. Without grasping and applying legal principles, a technical specialist or patent agent can inappropriately limit a client's invention, or ruin their chances of winning patent protection. Words--not dollars--represent the currency by which an invention is commercialized. As such, it is crucial to educate yourself about the meanings and connotations that words have in legal settings. For instance, all researchers know that a scientific publication is a "reference," but in patent law, calling a publication a "reference" is an admission that that publication may be relevant to your invention--and that may give the patent office a green light to use that work against you.
You are also called upon to convince an examiner that the "prior art"--the scientific and patent literature in existence before your client's invention was made--does not describe the invention, either in whole or in part. It takes logical arguments based on legal principles outlined in the statute, the regulations, and the government's tome on patent law practice to really succeed as a technical specialist or patent agent.
Many people start out as a technical specialist before eventually enrolling in law school. It's fair to say that many scientists seek out this route as a stepping stone to law school. Some law firms may urge you to go to school, while others do not push their employees one way or the other. Some have benefit plans that reimburse your tuition if you agree to practice with the firm after you graduate. Whatever the case, a technical specialist or patent agent job is a great starting point to get involved in patent law and put into use your scientific training.
Reporter, Interrogator, Advocator
In this respect, technical specialists and patent agents need to be interrogators as well as advocates for their client's invention. The old journalistic maxims of Who? What? Where? When? and Why? apply just as well to the inquiring minds of patent practitioners as they do to front-page newshounds. If you can't bear to bash out a 500-word abstract, then patent law isn't for you. Your entire day is spent mostly in front of the computer screen, typing letters, arguments, or applications. You have to like writing. Learning how to speak and write with precision, clarity, and logic or even having a journalistic streak is crucial in working in patent law.
Back in the Huddle
True to Lombardi's words, it's not all a one-man (or one-woman) show--the huddle is packed with talent other than that of the quarterback. Researchers, for instance, are key to providing information that a technical specialist or patent agent needs to create a winning legal argument. Researchers may be library employees or service-providers who search patent, case law, biotech, and literature databases as well as books and Internet sources according to your chosen key words or concepts. A law firm will either employ these people in-house or firms will outsource their searches to independent companies.
Those of you who left the lab and pursued an MBA, or who stayed in the lab and went to business school part-time, may find patent law to be just the opportunity you've been waiting for: The number of biotech start-ups who need advice on corporate law and designing scientifically sound business plans is only growing. Find out how to apply your hybrid skills to patent law--track down some local law firms and ask for an informational interview.
International Patent Agent of Mystery and Other Cool Things about Patent Law
One of the most rewarding aspects of patent law is that it offers the opportunity to work on cutting-edge science before it's published in Science. Not only being aware of the latest technological developments (that you help shape), your clients can be dotted around the world--you might file an application for a start-up company in India, correspond with inventors in Spain, and review experimental data from a university in Japan, all in the same "day"--so a sense of time around the globe is key.
Patent law also positions you as the front man in dealings with the U.S. government. It's up to you to convince the U.S. Patent and Trademark Office that they have never seen anything like your client's invention. If you have the right outlook, attitude, and enthusiasm, you'll find that coming to the office every day is every bit as stimulating as going to the lab.
"If you aren't fired with enthusiasm, you'll be fired with enthusiasm."
Enthusiasm, willingness to learn, and teamwork are, indeed, the keys to success, Lombardi remarked. "Teamwork is what the Green Bay Packers were all about," he revealed. It doesn't matter that you like or dislike football, or know who Vince Lombardi was ... the question is whether you can huddle, brainstorm, rip through the legal gridiron, and come home triumphant. A career in patent law doesn't kick off when you earn your law degree; it begins when you speak to your first client.